At the ICANN 45 meeting taking place in Toronto, an extensive list of proposed alterations of the rights protection measures (RPMs) for new gTLDs was presented to ICANN’s Board at a morning meeting on Tuesday, November 16th with ICANN’s Commercial Stakeholder Group. The list represents a general consensus between the Business and Intellectual Property Constituencies (BC & IPC) — while the ISP Constituency, while supporting their goals, is still reviewing the details.

While a member of the Business Constituency, ICA has not endorsed these proposals and may have large concerns about the substance of at least some of them, as well as whether they represent mere implementation details rather than significant substantive alterations.

For example, point #4 below would give trademark owners a prior restraint right to block domain registrations matching not just their marks – which is questionable in itself when a mark consists of a generic word – but of the mark plus associated generic terms, with the burden put on the registrant to demonstrate non-infringing intent in advance. In a recent letter to Congressional leaders, new CEO Fade Chahade pointed out that placing marks plus associated generic terms in the Trademark Clearinghouse (TMC) database would place ICANN in the inappropriate position of creating new rights rather than enforcing existing rights – a position with which ICA wholeheartedly agrees.

And point #5 would require validation of WHOIS information for all registrants, an issue that is currently the subject of heated negotiations between ICANN and registrars in regard to potential revisions of the Registration Accreditation Agreement (RAA).

The complete list of proposed RPM changes presented to the Board is —

Extend Sunrise Launch Period from 30 to 60 days with a standardized process

Extend the TMCH and Claims Notices for an indefinite period; ensure the process is easy to use, secure, and stable

Complete the URS as a low cost alternative and improve its usefulness – if necessary, ICANN could underwrite for an initial period.

Implement a mechanism for trademark owners to prevent registration of their marks (exact matches, plus character strings previously determined to have been abusively registered [or used] ) across all registries, upon payment of a reasonable fee, with appropriate safeguards for legitimate registrants

Validate contact information for registrants in WHOIS.

All registrars active in new gTLD registrations must adhere to amended RAA for all gTLD registrations they sponsor. .

Enforce compliance of all registry commitments for Standard applications. .

Expand TM claims service to cover at least strings previously found to have been abusively registered [or used].

The proposals met with a restrained response from ICANN Board members, notwithstanding what appeared to be pre-planned live microphone endorsements from representatives of such major brands as GE, Coca-Cola, the National Basketball Association, and Travelers Insurance that the alterations were required to protect consumers. Board Chairman Steve Crocker said he appreciated the specific nature of the proposals but noted that it would require extensive review.

Other Board members provided such additional feedback as:

· The cost of each of the suggestions would be a key consideration.

· There was a perception among other constituencies that the IPC in particular was unwilling to compromise and was continuously coming back for additional bites at the apple.

· It was very late in the process to consider significant alterations of the RPMs and doing so risked delaying the entire new gTLD program.

New CEO Fade Chehade said he wanted to think through all of the proposals “before we sign up for anything” and said there would be engagement in “deep development” on a collaborative basis. He also noted that there were multiple estimates of the true cost of URS filings but that the solution had to be finalized first – and observed that it was mid-October, with URS providers needed to be in place within a few months.

At both the Tuesday meeting and the Thursday Public Forum, Board Chairman Crocker said it was the responsibility of the two constituencies to “socialize” the proposals within the GNSO and get consensus support from other stakeholders before the Board would engage on them. ICA commends the Board for reaffirming the central role of the GNSO in formulating policy for gTLDs. We suspect that the BC and IPC will face considerable difficulty in lining up such consensus within the GNSO – but if any of the suggestions do make it to that stage, ICA will measure them against our recently published “domain rights dozen” principles for achieving acceptable balancing between trademark rights and domain rights.